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(Message started by: Mark McCormick on Apr 19^th, 2005, 12:31pm)

Title: Terminal Disclaimer
Post by Mark McCormick on Apr 19^th, 2005, 12:31pm

I would appreciate some advice on the following scenario:
Have filed a patent application and it is rejected on the grounds of double patenting.
Only some of the claims are actually at fault here.

Can you file a terminal disclaimer for some of the claims in a patent but not for other claims?

Title: Re: Terminal Disclaimer
Post by Wiscagent on Apr 19^th, 2005, 12:57pm

“A terminal disclaimer can be used to avoid an obviousness-type double patenting rejection. The disclaimer must include all claims of the rejected application even if only one claim is subject to the double patenting rejection.”

– from the PRG Patent Bar Prep Course

See CFR 1.321(b) and (c).

Title: Re: Terminal Disclaimer
Post by JimIvey on Apr 26^th, 2005, 9:18pm

Thanks, Richard, for the precise authority. I believe you can split the case into two applications (cancel some claims and file them as a continuation). However, I doubt that will result in a net gain of patent term given the pendency of continuation applications. In short, it's feasible to do, but probably not practical.

Regards.

Title: Re: Terminal Disclaimer
Post by JS on Nov 20^th, 2007, 4:28pm

terminal disclaimer issue with a twist:

Company A and Company B are co-assignees on patent 1 and patent 2. As co-assignees, they both have rights to 100% of the invention. Patent 2 has a terminal disclaimer based on the expiration date of patent 1.

Normally with a terminal disclaimer, if the assignee re-assigns one of the patents, but not the other, then the other patent would not be enforceable. However, how does this play out if you have co-assignees? If company A re-assigned patent 2, would this render patent 1 unenforceable, even though there is still a common owner, company B?

Any thoughts, references, case law, etc would be appreciated.

Title: Re: Terminal Disclaimer
Post by Isaac on Nov 20^th, 2007, 5:11pm

on 11/20/07 at 16:28:04, JS wrote:

Any thoughts, references, case law, etc would be appreciated.

I'm not sure of the exact mechanics, but I really don't see any problem in principle with a terminal disclaimer in this situation. When two entities co-own a patent, it takes the cooperation of both parties to sue on the patent, so a terminal disclaimer restricting the ownership to two companies would not seem to create the problem where some poor infringer gets sued repeatedly by different owning entities.

Title: Re: Terminal Disclaimer
Post by JS on Nov 27^th, 2007, 6:19pm

Yes, you are right, you can have co-owners of terminal disclaimer patents, however, MPEP section 804.02 states:

terminal disclaimers must include a provision that the patent shall be unenforceable if it ceases to be commonly owned with the other application or patent

if you have co-owners who hate each other, could one owner reassign one patent to screw the other owner out of being able to enforce the patents?

Title: Re: Terminal Disclaimer
Post by Isaac on Nov 27^th, 2007, 10:23pm

on 11/27/07 at 18:19:01, JS wrote:

Yes, you are right, you can have co-owners of terminal if you have co-owners who hate each other, could one owner reassign one patent to screw the other out of being able to enforce the patents?

Those kinds of tricks would not be necessary. All coowners have to participate to sue someone. The surly coowner could simply refuse to participate in a law suit.

Title: Re: Terminal Disclaimer
Post by JS on Nov 28^th, 2007, 11:59am

on 11/27/07 at 22:23:48, Isaac wrote:

Those kinds of tricks would not be necessary. All coowners have to participate to sue someone. The surly coowner could simply refuse to participate in a law suit.

expanding the hypo - A and B co-own patents 1 and 2 which are linked by terminal disclaimer. Patents 1 and 2 are licensed to C with the provision that the license is only enforceable against vaild patents. A without B's knowledge reassigns patent 1 to D. C upon finding out that A reassinged patent 1, C stops paying royalites.

Can B even bring suit against C, since the patents are no longer commly owned by A and B?

If B's ownership fulfills the commonly owned requirement, would B have to drag A and D into court with him?